WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
K-Tek Computers, Inc., d/b/a Computer Refurb v. Domains By Proxy, LLC / mail: and Fred Serhal
Case No. D2015-0225
1. The Parties
Complainant is K-Tek Computers, Inc., d/b/a Computer Refurb of Georgetown, Texas, United States of America ("United States"), represented by Blazier, Christensen, Bigelow & Virr, P.C., United States.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / mail: of Florida, United States and Fred Serhal of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <computerrefurb.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 11, 2015. On February 12, 2015, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On February 13, 2015, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on February 19, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 19, 2015.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on February 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 20, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on April 1, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The parties to this dispute are not strangers. Rather, according to the undisputed but somewhat unclear allegations of the Complaint, Respondent Serhal had entered into some type of agreement with Complainant in or around October 2012, pursuant to which Complainant would lease Serhal's domain name <computersnow.com> and use the corresponding website to market Complainant's refurbished computers. It is alleged that, nearly a year later, in connection with a dispute over payments owing under the agreement between Serhal and Complainant, Serhal suspended operation of the website, allegedly causing Complainant to lose business.
It is also alleged that Serhal somehow contrived, with the assistance of a friend of Serhal, to wrest the Domain Name <computerrefurb.com> from Complainant. In 2014, Complainant filed a lawsuit in a United States federal court in Texas against Serhal. As of the initiation of this proceeding, that lawsuit was still pending.
5. Parties' Contentions
Complainant alleges in this proceeding that Respondent is liable under the United States' Computer Fraud and Abuse Act, as well as under common law tort theories of conversion and trespass to chattels, for damages. Complainant also alleges, almost in passing, that it has satisfied the three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because each of the foregoing three elements must be established by Complainant in order to prevail, the failure to prove one element defeats the Complaint without regard to the merits of the other two elements. In the instant case, the Panel concludes that Complainant has not established that it has trademark rights in the term "computer refurb". Accordingly, the Panel will not address the "rights or legitimate interests" or "bad faith" elements.
Complainant claims to have unregistered trademark rights in the term "computer refurb", allegedly used in connection with the sale of refurbished computers. Other than a bare reference to the term "computer refurb" on its website, however, Complainant does not indicate how it uses that purported mark in commerce to identify and distinguish its goods and services.
The Panel finds the purported mark COMPUTER REFURB, used in connection with refurbished computers, to be descriptive at best, and not inherently distinctive. Accordingly, in order to establish unregistered rights in the alleged mark, Complainant must show that this merely descriptive mark has somehow acquired distinctiveness, i.e., that some relevant sector of the consuming public has come to associate the term "computer refurb" specifically with Complainant's offerings. No such showing has been attempted, much less made, by Complainant. Because Complainant has not shown that it has rights in a trademark for purposes of this proceeding, a claim under the Policy cannot succeed.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: April 6, 2015